6. At some point in 2013, I became aware that a company called Big Boat Interactive had filed an intent to use application for “AUTODUEL” for “computer game software for personal computers and home video game consoles.” At the time I learned of this, Maxx Kaufman was with Pixelbonic, which was working on a Kickstarter campaign with Big Boat Interactive for a computer game they intended to call “Autoduel.” I learned from Mr. Kaufman that SJG objected to use of the name “Autoduel” and filed an Opposition to Big Boat Interactive’s application for registration. I learned that Pixelbonic/Big Boat interactive decided it was easier to change the name than dispute the trademark issues over “Autoduel.” At the time, Mr. Kaufman was also working part-time for inXile, but inXile was not involved in the Pixelbonic/Big Boat Interactive Kickstarter project. Mr. Kaufman discussed the issues with me, at which time I told Mr. Kaufman I thought he should pursue use of “Autoduel” because I thought SJG did not own trademark rights in that term. I still believe this to be the case.
7. Indeed, during that time period, I learned from searching the USPTO website that SJG had long ago abandoned its only registration for “AUTODUEL!” At some point, I also learned that on May 23, 2013, apparently due to Big Boat Interactive’s trademark application filing, SJG filed an application to register “AUTODUEL” for “digital, downloadable, or electronic media; namely, text and graphic files of rules, maps, components, and supplements for family games, board games, and roleplaying games.” SJG claimed a first use in commerce of “at least as early as 01/06/2005,” which, based on what I have learned in this proceeding presumably referred to the time when SJG uploaded to
www.warehouse23.com archived some of the back issues from the 1980s and early 1990s that included the word “autoduel.”
8. On information and belief, on March 31, 2014, the Trademark Office issued a Notice of Abandonment of SJG’s trademark application and, although the application was temporarily revived, the Trademark Office issued another Notice of Abandonment on November 28, 2014.
9. Based on the information of which I was aware, as of shortly before July 23, 2015, I knew Origin Systems had stopped selling the computer game Autoduel more than 20 years ago, and that SJG had abandoned all trademarks and trademark applications for “AUTODUEL.” I was aware of no other uses of “AUTODUEL” by anyone. Therefore, as of shortly before July 23, 2015, I understood that the mark “AUTODUEL” was available.
10. I have considered for many years the possibility of developing a post-apocalyptic computer game that would include battling vehicles. This is a fairly popular genre whose themes have been in popular movies such as the Mad Max franchise. In 2015, I decided to proceed with the design and development of such a game, and after I confirmed that “Autoduel” was available for a name, I decided to name my game “Autoduel.”
[...]
14. Attached hereto as Exhibit 55 is a true and correct copy of a November 11, 2015 email from me to others listed at inXile. In that email, I forwarded an article I had read on a gaming industry website, and commented to my design and development team: “It will be a fine line we walk with Autoduel for mobile when we decide to start designing it.” I was referring to a mobile phone version of Autoduel, which is one of the versions of the Autoduel game we are considering.
15. Attached hereto as Exhibit 56 is a true and correct copy of an email from Eric Daily to me dated December 4, 2015. Mr. Daily is and was at the time a Producer at inXile. In his email, which has the subject line “Wasteland: Autoduel mobile,” he refers to a conversation he overheard between me and “George,” who is George Ziets, who was at the time and is a lead writer at inXile, about a mobile vehicular combat game, i.e., Autoduel. Mr. Daily was giving me some ideas for the Autoduel game we were and are planning.
16. Attached hereto as Exhibit 57 is a true and correct copy of an email exchange on January 11, 2016 between Chris Keenan, who is and was at the time Vice President of Development at inXile, and me regarding the “mobile focused Autoduel product.”
[...]
19. Attached hereto as Exhibit 60 are email exchanges between persons at Pixel Dash Studios and persons at inXile from April 5 through April 12, 2016. The emails refer to a proposal Pixel Dash made to inXile for Autoduel. Pixel Dash is an outside studio that was aware of inXile’s plans for Autoduel and made the proposal in an effort to work with inXile on Autoduel. Pixel Dash’s April 5, 2016 proposal is also attached hereto. One of the emails from Matt Findley of inXile notes that Mr. Findley had talked to me about Pixel Dash’s proposal for Autoduel, and Mr. Findley was forwarding my general comments on their proposal.
20. Attached hereto as Exhibit 61 is an email I received from Mr. Beekers on May 30, 2016, with which he attached a “pitch” for his ideas for the Autoduel game. The thirteen page pitch is also attached hereto.
21. On January 5, 2017, Mr. Daily sent me an email with some thoughts about using “Autoduel” and possibly including independent developers. At that time, we were approaching the release of Torment, so it would be normal for Mr. Daily to be thinking about other projects in the pipeline to turn his attention to. On that same day, I responded to Mr. Daily. I indicated that Mr. Beekers had already prepared an initial design for Autoduel and that we would bring Mr. Daily into the loop. Attached hereto as Exhibit 62 is a true and correct copy of the January 5, 2017 email exchange.
22. inXile completed and released Torment on February 28, 2017. This freed up resources at inXile to focus on moving forward with other games in the pipeline. Shortly after the release of Torment, I formally assigned Mr. Daily as the Producer of Autoduel at inXile. Thereafter I assigned Thomas Beekers to be the Designer of Autoduel. Autoduel is now one of four new games inXile is working on. inXile’s recent work on Autoduel has included researching other games in the market, continuing work on design and design documents, and continuing work on concept and concept art.
23. inXile intended to use “Autoduel” for its game on July 23, 2015, and still intends to use it. On the other hand, although SJG claims it has continued to use the mark and intends to do so in the future, I have seen no evidence to support such a claim. I believe that SJG is simply trying to prevent others from using the name even though SJG has not used it for years and has no intent to use it.
They're doing some side scroller space rogue-lite instead.
